Nowadays, as virtually any business and trademark is represented on the Internet, one crucially needs to have efficient mechanisms to protect its trademark from unauthorized use in the worldwide web. Generally, such unauthorized use may include use of the trademark on web-pages. For example, for promotional purposes or in the course of online marketing of products, etc., and in domain names. As any other infringement, the above-mentioned activities may cause confusion and affect the reputation and profit of the trademark owner.

At the same time, when fighting such infringement the trademark owner will face some special issues such as e.g. obtaining proof of infringement, choosing the correct defendant, available remedies, etc. Below we will provide the overview of the relevant legal provisions and some practical approaches regarding protection against trademark infringement on the Internet.

Legal framework

In accordance with Clause 4 of Article 16 of the On Protection of Rights in Marks for Goods and Services Act of Ukraine No. 3689-XII of 15 December 1993 (hereinafter — the Trademark Act) the following is recognized as use of trademark: applying trademark on product for which the trademark is registered, package containing such product, signboard related thereto, label, tab, tag or other item attached to the product, storing such product bearing the trademark as mentioned above with purpose to sell, offer for sale, sale, import and export; use of trademark while offering and rendering any service for which the trademark is registered; applying the trademark in business documentation and advertising as well as on the Internet.

The Trademark Act further provides that the trademark registration gives to the owner thereof the exclusive right to prohibit use of: registered trademark with respect to goods and services indicated in the certificate; registered trademark with respect to goods and services related to those indicated in the certificate if such use can mislead in regard to person that manufactures products or provides services; designation that is similar to the registered trademark with respect to goods and services indicated in the certificate, if such use can entail confusion between the designation and the trademark; designation that is similar to the registered trademark with respect to goods and services related to those indicated in the certificate, if such use can mislead with regard to the person that manufactures products or provides services or entail confusion between the designation and the trademark.

Furthermore, under Paragraph 2 of Article 20 of the Trademark Act it is expressly stipulated that use of the trademark or confusingly similar designations in domain names, without the consent of the trademark owner, shall be infringement of trademark owner's rights.

The aforesaid provisions make the legal basis for protection of trademark rights against infringement on the Internet. However, to understand, from the practical standpoint, how the trademark owner may exercise his rights in relevant cases it is important to address the practice developed by Ukrainian courts.

Actions against unauthorized use on web-pages

It so happens often that a trademark or confusingly similar designation is unlawfully used on the Internet to promote or offer counterfeit products and/or services. Those situations are, as a rule, treated by courts similarly to other activities that fall within the scope of trademark infringement (e.g. manufacturing the infringing products) and satisfy the claims that are based on the requirements of the Trademark Act, such as to stop the infringing activities or forbid the respective use, e.g.:

— in the Decision of the Commercial Court of Kiev of 4 February 2015 in the matter No. 5011-12/16264-2012 the court decided, inter alia, that the defendants must stop using the tree-shaped designations which are confusingly similar to trademarks under International Registrations No.612525, 579396, in particular, applying them on air-fresheners and scented magnets, storing with the purpose of sale, offering for sale, particularly on the Internet;

— in the Decision of the Commercial Court of Kiev of 17 September 2014 in case No.910/13106/14 the court decided, inter alia, to prohibit the defendant from using the designations Kaeser, KAESER Kompessoren, Sigma, in particular, on the Internet, including the website www.zelko.ua.

Actions against unauthorized use in domain names

Recent court practice shows that, where the trademark infringement is established, the Ukrainian courts tend to satisfy the demands to re-delegate the domain name from the infringer to the trademark owner, or to cancel the delegation of the domain name in the name of the infringer.

This approach can be seen in a number of court decisions, including:

— the Decision of the Commercial Court of Kiev of 26 November 2014 in case No. 910/8223/14 where the court decided, inter alia, that the defendant must stop the violation of intellectual property rights in and to prohibit the use of trademarks VILPE and VILPE Innovative and Easy, and the registrar of the domain names vilpe.com.ua and vilpe.net.ua must transfer the domain names in favor of the trademark owner;

— the Decision of the Solomiansky District Court in Kiev of 24 December 2014 in case No.760/23278/14-n where the court decided, inter alia, to prohibit the defendants from using the plaintiff's trademarks Tiffany & Co., Tiffany and designations confusingly similar to them, and to obligate the registrants of the domain names to re-delegate the domain names in favor of the plaintiff.

This is the favorable development of practice, as earlier such demands were usually dismissed by courts for a number of reasons.

Procedural issues

Although court practice is quite favorable to trademark owners, the appropriate protection strategy should be chosen and the relevant procedural issues need to be considered thoroughly.

One of the most important issues is how to choose the defendant. Where the infringement on the Internet is concerned the potential defendants may include the person to which the domain name is delegated and even the respective domain name registrar, as the case may be. Bringing a lawsuit against such persons may allow demanding re-delegation or cancellation of the infringing domain name or removal of the trademark or confusingly similar designation from the respective website. At the same time, the circle of defendants may be broader, e.g. the domain name holder and the seller of the infringing products offered on the respective websites, may appear to be different persons.

In some cases information regarding the registrant of the domain name may be obtained from the publicly available WHOIS database, such information may be confirmed, e.g., by the respective expert conclusion. However, if the database does not include such information (e.g. it is indicated that the domain name is registered "on behalf of the client") the lawsuit may be brought against the registrar of the respective domain name. The information regarding the actual domain name holder in such a case may be further requested from the registrar by the court, for this purpose the plaintiff shall submit the respective motion to request the information. According to current court practice, courts do not tend to request the information themselves and thus the initiative should come from the party concerned.

In terms of proving the illegal use of a trademark, different options may be considered, depending on the situation. For example, an expert conclusion confirming content of the respective web-pages (e.g. conclusion on the research in the telecommunication systems) may be obtained from the authorized institution and submitted to the court. In some cases plaintiffs submit notarized protocols ascertaining the website content. However, such protocols usually may only be obtained from foreign notaries and the courts do not always treat them as due evidence.

If the infringing products are offered on the Internet then samples of such goods should be ordered. Such samples of the infringing products bearing the name of the manufacturer/ importer (infringer) along with the respective invoices, purchase receipts, delivery and acceptance acts may serve as due evidence of the infringement.

The issue of jurisdiction should also be mentioned. For example, while the initial lawsuit may be brought to the commercial court indicating the domain name registrar as a defendant, in absence of information of the domain name holder, the latter may then appear to be an individual who is not private entrepreneur and therefore may not be a party to a dispute heard by a commercial court. A legal action against such individual shall be brought to the common court, not commercial. Moreover, even if the individual is a private entrepreneur, different approaches are still possible. For instance, The Higher Commercial Court of Ukraine in its Resolution of 8 June 2010 in the matter No. 20/590 dismissed all the claims (including those to obligate the defendant to stop use of the domain name michelin.com. ua and to transfer the domain name in favor of the plaintiff), arguing that the defendant has double status: as an individual and as a private entrepreneur, and the plaintiff did not disprove the fact that the defendant registered the domain name as an individual and not as a private entrepreneur.

Thus, recent court practice shows that the existing laws may be used efficiently to protect one's trademark from infringement on the Internet and to exercise trademark rights more broadly. Still, the peculiarities of the virtual environment should be taken into account by the trademark owner to attain the goals and mitigate associated risks.